It is our belief that there has never been a time in the history of the United States that trademarking has been as important as it is today. Thus, you will want to make sure you have retained the right trademark lawyer to assist you with your needs.
Brands continue to be developed on a daily basis, and there is a real struggle to find names and designs that are not already taken by other individuals or companies, and that are also unique enough to earn protection by way of a registration from the U.S. Patent and Trademark Office.
Many people are beginning to understand the importance of hiring a trademark lawyer. It is estimated that a whopping 10.9 million trademark applications were filed around the world in 2018 and that there were 49.3 million active trademark registrations, which is up 13.8% from 2017.
But what exactly is a trademark, and why is it so important to hire a trademark lawyer?
What Is A Trademark And What Does A Trademark Lawyer Do?
Most people have heard the word “trademark” used in conversation, but may not have a grasp on what it truly means or what a trademark lawyer does. In fact, many people oftentimes confuse the word “trademark” with other intellectual property terms such as “copyright” and “patent.”
A trademark is commonly a word, group of words or image (design) that is used to identify the creator of a good or service.
A trademark lawyer will assist you with registering a trademark, earning consideration from licensing/assigning a trademark, or taking action against others who may be interfering with your trademark.
You want to hold the registration to trademarks that you use in commerce, and you want to avoid using trademarks that are used by others in such fashion. You especially want to do whatever is necessary to not become married to any trademark that is identical to or likely to be confused with a trademark that is already registered by another individual or corporate entity (known as infringement).
Hiring a trademark lawyer, such as a law firm like Heitner Legal, can help you figure out the do’s and don’ts when it comes to selecting trademarks for use in commerce and avoiding those marks that may already be in use by others.
Additionally, the advantage of hiring a trademark lawyer to assist in the trademarking process is that a good trademark lawyer will have a lot of experience with the entire trademarking process (such as handling Office Actions, Suspension Notices and Oppositions) as well as a level of comfort in communicating with examining attorneys who are employed by the U.S. Patent and Trademark Office.
Of note, in 2013, The Wall Street Journal published an article that states, on average, only 42% of trademark applications filed without the assistance of a trademark lawyer were registered, while 60% of those filed with a trademark lawyer reached registration status. Numbers don’t lie.
Trademark Lawyer FAQs
What kinds of services do trademark lawyers offer?
Trademark lawyers can offer various types of services. At Heitner Legal, we offer services such as performing an exhaustive search of the Internet and the U.S. Patent and Trademark Office to determine whether certain marks are already in use, handling the registration process from the starting point of filling out an application all the way through registration and everything in between, drafting cease and desist letters against those guilty of infringing existing trademark registrations, prosecuting and defending against opposition actions near the end of a trademark application’s registration process, and serving as plaintiff’s counsel or defendant’s counsel in federal court trademark infringement/dilution litigation.
How much does a trademark lawyer cost?
Trademark lawyers can vary in cost depending on the expertise and experience of the lawyer as well as the tasks that the lawyer is asked to perform. Handling the trademark registration process includes a built-in cost to the applicant, and the trademark lawyer should cover the client’s processing fee that is paid to the U.S. Patent and Trademark Office. In general, you can expect to pay roughly $1,300 per trademark application (inclusive of costs to the U.S. Patent and Trademark Office) to a trademark lawyer to handle the trademark registration process.
Do I need to find a trademark lawyer near me?
While you may be interested in retaining a lawyer that is close in proximity for commercial litigation matters, most of the services provided by a trademark lawyer can be performed by any experienced practitioner who is licensed by at least one state bar in the United States. Thus, you should not necessarily trade the experience of a trademark lawyer for one who just happens to live/work close to where you reside.
How long does the trademarking process take?
We have found that, on the low end, it can take roughly 5 months from the submission of a trademark application with the U.S. Patent and Trademark Office to registration of the mark. When there is an inquiry from the examining attorney at the U.S. Patent and Trademark Office, the process can often take up to a year before a registration is granted. Remember, that does not mean that you cannot nor should not be using the mark in commerce in the meantime! Sometimes, the application process can last even longer than that, especially if a third party decides to file an opposition to your trademark application once it has been published for opposition. You will certainly want a trademark lawyer to guide you through that process if you are either opposing a mark or defending against someone who has filed an opposition against your application.
Best Reasons For Hiring A Trademark Lawyer
Finding a trademark lawyer who you trust can be a tough task.
It is also sometimes difficult to understand whether you should file a trademark application, whether you need a trademark lawyer to help you out and what the major benefits of possessing a trademark registration may be.
If you do not have the time to read through everything below, here is a quick rundown of what we believe to be the most important aspects of having a trademark and why you should have a trademark lawyer to assist you through the process.
- Peace of mind
- Economic opportunities
- Federal litigation option
- Exit options
1. Peace of mind
It is very difficult to place a price tag on peace of mind. While there are many economic benefits from working with a trademark lawyer to obtain a trademark registration, the most beneficial component of the registration may be the peace of mind you earn when you receive your registration certificate.
A trademark registration creates a legal presumption that you own the mark throughout the United States (assuming that you have filed an application to register the mark with the U.S. Patent and Trademark Office).
Without a registration, anyone could lay claim to the mark and at least argue that they were using the mark in commerce prior to your use. With a registration in hand, it is assumed that you not only are the rightful owner of the mark, but that you have exclusive rights to use it in commerce.
This is very important as you develop your brand and business. The last thing you want is to hear from another person, out of the blue, who claims rights to your mark, demands that you stop using it and says you need to pay up for your unauthorized use to date.
If you are the person with the trademark registration, then you can use it as leverage against others. Often, you will retain a trademark lawyer to assist you in this process.
This leverage can be very important to use when an individual or competing business decides to use a trademark that is similar to yours to the extent that it is likely to confuse consumers as to whether you are affiliated with their use.
Without a registration, your trademark lawyer may be able to claim common law rights to the mark, but it is a much more difficult case to prove. With a registration in hand, your trademark lawyer will cite to the valid registration and demand that the alleged infringer rebrand or else face the consequences.
3. Economic Opportunities
Having a trademark lawyer to assist with earning a trademark registration is not only about having peace of mind and telling others to rebrand so as not to confuse the consuming public. It may also create many revenue generating opportunities that would not necessarily be present without the trademark registration in hand.
Companies often want the confidence of knowing that a trademark registration is in place before entering into licensing deals. For instance, National Football League running back Marshawn Lynch filed numerous trademark applications (and received registrations) for “Beast Mode.”
Instead of creating his own goods and selling them directly to consumers, Lynch licensed the rights to his trademark registrations to third parties who then manufactured, distributed and sold a variety of items bearing the “Beast Mode” trademark. With a good trademark lawyer, these deals are possible and can be structured in a way where there are many protections for holder of the trademark registration.
4. Federal Litigation Option
If you have a trademark registration, then you can sue any infringers in federal court. When you are able to prove infringement, you can potentially receive an injunction to prevent the infringer from continuing to use the mark at issue, an order that requires the infringer to destroy items bearing the infringing mark, reimburement of your trademark lawyer fees and, importantly, monetary relief.
Trademark infringement actions can lead to a big windfall for the winner. Damages can be as high as $2 million for willful infringement.
It is highly recommended that, if you litigate, you hire a seasoned trademark lawyer who has been involved in federal trademark infringement actions in the past.
5. Exit Options
You may not currently be thinking about it but, at some point, you could possibly be in a position to sell your business. One thing acquirers almost always look at in their deligence is what type of intellectual property portfolio is possessed by the potential seller.
Like owning a piece of land, owning a trademark is a right that does not expire unless you fail to make regular renewal payments and prove that you are still using the trademarks in commerce.
When you buy a house, you are not just buying the structure, you are buying the land. Similarly, when a company buys another company, it is not just buying the assets and liabilities, but also what may be valuable intellectual property, including trademarks. Good trademark lawyers always look out for this.
How To Choose A Trademark Lawyer
If you got through this entire article, then you may be wondering to yourself what you should be looking for in a good trademark lawyer.
- If cost is a concern, then you not only want to find a trademark lawyer who is within your budget, but also one who will explain the trademarking process to you, as well as your options. You do not need to file for numerous trademark registrations at once, nor do you need to cover every class of goods and services in your filing.
- Are you looking to apply for a trademark registration or send someone a cease and desist or handle complicated trademark infringement litigation? Make sure you find a trademark lawyer who has the capacity to handle your specific trademark-related needs.
- Is experience a big concern for you? Make sure to ask any trademark lawyer how many trademarks he/she has filed, the jursidictions in which the trademarks have been filed, how many trademark infringement actions have been handled by the trademark lawyer, etc. At Heitner Legal, we have handled the transactional and adversarial components of trademark law.